Dear Sarah, In day before's last STI call I managed get the following language negotiated in:'failure to file should not be perceived to be lack of vigilance by Trademark holders.' Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com *** This Message Has Been Sent Using BlackBerry Internet Service from Mobilink *** -----Original Message----- From: "Deutsch, Sarah B" <sarah.b.deutsch@verizon.com> Date: Thu, 10 Dec 2009 16:40:00 To: <icann@rodenbaugh.com>; Susan Kawaguchi<skawaguchi@facebook.com>; <bc-gnso@icann.org> Subject: RE: [bc-gnso] Fw: [gnso-sti] RE: Draft STI Report - V4 for your review I agree with this approach. We should also make clear that the Clearinghouse is not a true "remedy," but as a specific tool, which can be used for the purpose of applying for multiple sunrise registrations. Many businesses, however, still don't want to be forced to use this process at all and there should no negative implication from not using the tool or the sunrise process. The STI also does not discuss the difference between the use of the Clearinghouse for an "IP Claims" service (which could be a TM remedy) vs. the sunrise option. Because registries have a choice between the two, most registries would choose the more lucrative sunrise option. I also did not see any discussions of the minimum standards that should be included in any sunrise process as the IRT recommended in its report. The "something is better than nothing" nature of the Clearinghouse shifts focus to the limited remedy of the URS . Because the URS has no transfer option, it's important to highlight that trademark owners will inevitably bear increased costs from filing multiple URS actions against different cybersquatters, monitoring and docketing suspensions, trying to win back expiring names or filing more UDRPs to actually win valuable names back into their portfolios . Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 sarah.b.deutsch@verizon.com ________________________________ From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Thursday, December 10, 2009 4:04 PM To: 'Susan Kawaguchi'; bc-gnso@icann.org Subject: RE: [bc-gnso] Fw: [gnso-sti] RE: Draft STI Report - V4 for your review Hi Susan, Thanks for your thoughts. I think we are on the same page, naturally, as we have had much the same experience with many prior sunrise processes. To clarify, we are not opposing the Clearinghouse as framed. Something is better than nothing. We are suggesting it should have much broader applicability, and thus usefulness, both as to the scope of marks allowed into the database, and the further use of the database throughout the life of new gTLD registries. We are suggesting that a feasibility study be done, based on the TMC as framed, as compared to also requiring broader applicability, before a final decision is made. We are suggesting the costs should be borne by ICANN and its registries and registrars, who benefit by far the most from the TMC as framed, and not borne by TM owners and other registrants, except for a minimal registration fee to submit their public records into the database. Zahid and I hope we have consensus within the BC for these positions, based on our written consensus statements of a month or so ago. Please advise if you do not support any of this. Mike Rodenbaugh RODENBAUGH LAW 548 Market Street San Francisco, CA 94104 (415) 738-8087 <http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&ref erer=http://rodenbaugh.com/contact> http://rodenbaugh.com <http://rodenbaugh.com/> From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Susan Kawaguchi Sent: Thursday, December 10, 2009 12:41 PM To: zahid@dndrc.com; bc-gnso@icann.org Subject: RE: [bc-gnso] Fw: [gnso-sti] RE: Draft STI Report - V4 for your review Importance: High Hello Zahid, I have briefly reviewed the latest draft of the STI report and I am concerned about the level of consensus that the BC is supporting on the IP Clearinghouse in general. In Section 1.1 and 5.1 you have noted a "Rough Consensus" for each principle. We should change the designation of our support of the IP Clearinghouse to Unanimous Consensus. I am concerned that if we do not support the IP Clearinghouse as it is designed for the Sunrise period we will end up with no standard process in the new gTld rollout. A standard process across all gTld's is vital to a company like Facebook. In my experience in previous gTld rollouts and ccTld rollouts numerous hours and outside counsel fees were expended to understand and participate in the Sunrise periods. I firmly believe that the IP Clearinghouse will ease this burden going forward for Facebook. In the BC meeting in Seoul I argued strenuously to extend the use of the IP Clearinghouse to post sunrise period but did not realize that this would bring the BC to this Rough Consensus opinion. I will still argue for the use of the IP Clearinghouse in the post Sunrise period but if we lose the battle to have it implemented at all we have nothing to build upon in the future. The IP Clearinghouse is vital to the Sunrise process and would I urge others on the list to rethink the BC's stance on it a Unanimous Consensus is our best protection at this point in the process. Best regards, Susan Kawaguchi Domain Name Manager Facebook Inc. 1601 S. California Avenue Palo Alto, CA Phone - 650 485-6064 Cell - 650 387 3904 NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents." From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Zahid Jamil Sent: Wednesday, December 09, 2009 11:48 AM To: bc-gnso@icann.org Subject: [bc-gnso] Fw: [gnso-sti] RE: Draft STI Report - V4 for your review Importance: High FYI. Mike and me are drafting a minority report based upon existing BC positions culminating in the consensus at the Seoul meetings and comments from the list. Unfortunately it seems we will probably have one day to submit this. We will be able to post the draft by tomorrow morning and look forward to comments tomorrow and will at day end submit to the STI. Comments today so we can use them in our draft would be appreciated and would help speed matters up. Sincerely, Zahid Jamil Barrister-at-law Jamil & Jamil Barristers-at-law 219-221 Central Hotel Annexe Merewether Road, Karachi. Pakistan Cell: +923008238230 Tel: +92 21 5680760 / 5685276 / 5655025 Fax: +92 21 5655026 www.jamilandjamil.com *** This Message Has Been Sent Using BlackBerry Internet Service from Mobilink *** ________________________________ From: Margie Milam <Margie.Milam@icann.org> Date: Wed, 9 Dec 2009 11:30:23 -0800 To: 'GNSO STI'<gnso-sti@icann.org> Subject: [gnso-sti] RE: Draft STI Report - V4 for your review Dear All, Thank you for a very productive call today. Attached for your review is the fourth draft of the STI Report, which attempts to pick up our discussions today. I believe we are very close to a final version of this the report and would appreciate your comments or revisions by the close of business today, so that I can prepare the final report tomorrow morning. Also, please send your minority reports by tomorrow morning to ensure inclusion in the version that will be circulated to the GNSO Council. As discussed, if you need more time to draft a minority report, you would need to send to me next week, so that it can be forwarded to the Board after the GNSO Council vote (if successful) next Thursday. Best Regards, Margie _____________ Margie Milam Senior Policy Counselor ICANN _____________